USPTO Patents Application 10004917

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERC
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 223 1 3- 1 450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/004,917

12/04/2001

7590

12/30/2003

Thomas N. Young

Young & Basile, P.C.

3001 West Big Beaver Road, Suite 624

Troy, MI 48084

Keith V. Leigh-Monstevens

APN-132-A

1527

EXAMINER

KERSHTEYN, IGOR

ART UNIT

PAPER NUMBER

3745

DATE MAILED: 12/30/2003

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/004,917

Examiner

Igor Kershteyn

Applicant(s)

z

LEIGH-MONSTEVENS ET AL

Art Unit

3745

- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )D Responsive to communication(s) filed on .

2a)Q This action is FINAL. 2b)^ This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-12 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) KI Claim(s) 5-72 is/are allowed.

6) E3 Claim(s) 1 and 2 is/are rejected.

7) ^ Claim(s) 3 and 4 is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10)^ The drawing(s) filed on 04 December 2001 is/are: a)03 accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).

1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. §§119 and 120

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)DAII b)D Some*c)D None of:

Certified copies of the priority documents have been received.

Certified copies of the priority documents have been received in Application No. .

1. D

2. D
3-D

Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

13) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application)

since a specific reference was included in the first sentence of the specification or in an Application Data Sheet.
37 CFR 1.78.

a) □ The translation of the foreign language provisional application has been received.

14) ^ Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121 since a specific

reference was included in the first sentence of the specification or in an Application Data Sheet. 37 CFR 1.78.

Attachment(s)

1 ) ^ Notice of References Cited (PTO-892)

2) O Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) [3 Information Disclosure Statement(s) (PTO-1449) Paper Note) 2.3 .

4) Q Interview Summary (PTO-413) Paper No(s).

5) CH Notice of Informal Patent Application (PTO-152)

6) □ Other:

U.S. Patent and Trademark Office

PTOL-326 (Rev. 11-03)

Office Action Summary

Part of Paper No. 4

Application/Control Number: 10/004,917
Art Unit: 3745

Page 2

DETAILED ACTION

Claim Rejections - 35 USC § 102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 1 02 that
form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless -

(e) the invention was described in a patent granted on an application for patent by another filed in the
United States before the invention thereof by the applicant for patent, or on an international application
by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this
title before the invention thereof by the applicant for patent.

The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act
of 1999 (AIPA) and the Intellectual Property and High Technology Technical
Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting
directly or indirectly from an international application filed before November 29, 2000.
Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior
to the amendment by the AIPA (pre-AlPA 35 U.S.C. 102(e)).

Claims 1 and 2 are rejected under 35 U.S.C. 102(e) as anticipated by or, in the
alternative, under 35 U.S.C. 103(a) as obvious over Tsai (6,401,966).

In figures 1-4, Tsai teaches a damper including a housing 10, including port
means 1 1 , and an imperforate diaphragm 20 carried by the housing 10 beneath the port
means 1 1 and forming a boundary for a system so that the diaphragm may deflect in
response to vibrations transmitted through the hydraulic fluid in the system to effect
damping of the vibrations, the housing 10 having a canister configuration and includes a
thin imperforate annular sidewall (not numbered) above the diaphragm of substantially

Application/Control Number: 10/004,917 Page 3

Art Unit: 3745

uniform thickness and coacting with the diaphragm 20 to define a large volume fluid
chamber 16 above the diaphragm 20 providing further system damping by virtue of
vibratory volumetric expansion of the annular wall (inherently ), the housing 10 includes
an upper part defining the annular sidewall and the port means 1 1 and a lower part 30
positioned beneath the diaphragm 20, and the upper and lower part 30 coact to clamp a
peripheral edge portion of the diaphragm 20 therebetween.

Claim Rejections - 35 USC § 103

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

Claim 1 is rejected under 35 U.S.C. 103(a) as being unpatentable over Murphy
(5,368,073) in view of European Patent Application No. 019791 1 .

In figures 1-3, Murphy teaches a damper 10 including a housing, including port
means 30, and an imperforate diaphragm 66 carried by the housing beneath the port
means 30 (see MPEP 2144.04.VI. REVERSAL, DUPLICATION, OR RE-
ARRANGEMENT OF PARTS) and forming a boundary for a system so that the
diaphragm 66 may deflect in response to vibrations transmitted through the hydraulic
fluid in the system to effect damping of the vibrations, the housing 10 having a canister
configuration and includes a thin imperforate annular sidewall (not numbered) above the

Application/Control Number: 1 0/004,91 7 Page 4

Art Unit: 3745

diaphragm 66 of substantially uniform thickness and coacting with the diaphragm 66 to
define a large volume fluid chamber above the diaphragm 66.

Murphy doesn't teach the damping by virtue of vibratory volumetric expansion of
the annular wall.

European Application teaches a hydraulic damper in a form of the wall that is
damping vibrations by virtue of vibratory volumetric expansion of the annular wall 34.

Since Murphy and European Application are analogous art because they are
from the same field of endeavor, that is the hydraulic damper art, it would have been
obvious at the time the invention was made to a person having ordinary skill in the art to
utilize the wall of Murphy to damp vibrations as taught by European Application.

Allowable Subject Matter

Claims 5-12 are allowed.

Claims 3 and 4 are objected to as being dependent upon a rejected base claim,
but would be allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims.

Prior Art

Prior art made of record but not relied upon is considered pertinent to Applicant's
disclosure and consist of one patent.

Application/Control Number: 10/004,917 Page 5

Art Unit: 3745

Herald, Jr. et al. (5,806,705) is cited to show a plastic accumulator having a
diaphragm but fails to teach a housing wall and a diaphragm defining a chamber
adjacent to port means.

Contact information

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Examiner Kershteyn whose telephone number is (703)
308 8317. The examiner can be reached on Monday-Friday from 8:00 a.m. to 4:30 p.m.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Edward Look, can be reached on (703) 308 1044. The fax number is (703)
872-9306.

Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the Group receptionist whose telephone number is
(703) 308 0861.

IK

December 19, 2003

Igbr Kershteyn
Patent examiner.
Art Unit 3745

EDWARD K. LOOK
SUPERVISORY PATENT EXAMINER
TECHNOLOGY CENTER 3700